Amazon.com wins domain names in controversial decision

In a split decision, a World Intellectual Property Organization (WIPO) arbitration panel has ordered the owner of two domain names to transfer the names to Seattle-based internet retail giant Amazon.com.

The disputed domain names, 'amazoncar.com' and 'amazonecar.com', were registered and owned by Sung Hee Cho of Korea. Sung was not using 'amazonecar.com', but was using 'amazoncar.com' for a Korean language website offering Kia and Hyundai car rentals and leases. The US company, which also sells cars, claimed that Sung was unfairly capitalizing on the famous AMAZON.COM trademark and filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP). Sung did not defend the claim.

Amazon.com had to prove the following three elements under the UDRP to obtain the transfer of the disputed domain names:

• that the disputed domain names were confusingly similar to Amazon.com's trademark;
  
  
• that Sung had no legitimate rights or interests in the domain names; and
  
  
• that the domain names were registered and used in bad faith.

All three WIPO panel members agreed that 'amazoncar.com' and 'amazonecar.com' were confusingly similar to the AMAZON.COM trademark. Because the disputed domain names incorporated the well-known name in its entirety, WIPO arbitration precedent and common sense guided the panel to find a likelihood of confusion. They thought that adding the words 'car' and 'ecar' did not serve to avoid confusion. Similarly, the panel members unanimously determined that Sung had no legitimate rights or interests in the disputed domain names.

However, the panel disagreed on the issue of whether Amazon.com sufficiently demonstrated that the domain names were registered in bad faith. The two-member majority inferred bad faith because it would "strain belief" that Sung was unaware of the internationally famous Amazon.com and its reputation as a leading global e-tailer when he registered the domain names in 2000. The majority therefore reasoned that Sung's intentions must have been to take advantage of the US company's name and reputation by making consumers think 'amazoncar.com' had some affiliation with it. The fact that 'amazonecar.com' had never been used was also significant to the majority's inference of bad faith.

The dissenting panellist disagreed. She argued that since the Amazon is also a famous river and the word 'car' is a general term, Amazon.com should have been required to present concrete evidence of bad faith. She went on to point out that the AMAZON.COM trademark was not related to the automobile industry and that Amazon.com's car business operates under the name 'carsdirect.com'. She also explained that the 'amazoncar.com' website was only in Korean and targeted at Koreans. These factors convinced the dissenting panellist that Amazon.com had not met its burden of proving bad faith on the part of Sung. Accordingly, she felt that there was no justification for ordering the transfer of the disputed domain names.

This case demonstrates the limited scope of the UDRP which only punishes bad-faith registration of domain names. In cases where the defendant does not respond and is not a well-known cybersquatter, it can be difficult to prove the nature of the defendant's motives and determine whether the registration was made in bad faith.

(For a discussion of a similar ruling, see Federal Court says too many Virgins.)

Mark Radcliffe and Brad Laybourne, Gray Cary Ware & Freidenrich LLP, Palo Alto